IP Paralegal
📋 Role Overview & Responsibilities
Intellectual Property Paralegal
SummaryWe are seeking a highly experienced and motivated Intellectual Property (IP) Paralegal to join our client's dynamic IP practice group. You will play a vital role in assisting the firm's attorneys with all aspects of client representation, from counseling and clearance to licensing, prosecution, and enforcement. The firm's diverse clientele spans a broad range of industries, providing you with exposure to a stimulating and ever-evolving legal landscape.
ResponsibilitiesManage and maintain extensive trademark and design patent portfoliosProactively identify opportunities for new filings and address potential issuesConduct comprehensive preliminary U.S. and international trademark and design patent searchesAnalyze and report search results, providing clear and actionable insightsCoordinate U.S. and international full search projects with foreign counselDraft well-considered responses to U.S. Office Actions and Information Disclosure StatementsCollaborate seamlessly with foreign counsel on all aspects of IP mattersPrepare clear and concise client correspondence, including summaries, recommendations, and risk assessmentsHandle post-transaction recording of worldwide assignments and other closing documentsAssist with U.S. and international oppositions and cancellations
QualificationsMinimum of 6-8 years of experience as an IP paralegal, preferably within a law firm settingProven track record of success in a fast-paced environmentStrong analytical and research skills with a keen eye for detailExcellent communication and interpersonal skills, with the ability to effectively collaborate with clients, attorneys, and colleaguesIn-depth knowledge of domestic and international trademark and design patent law, including clearance, due diligence, registration, maintenance, and enforcementDemonstrated ability to independently manage all aspects of U.S. and foreign IP prosecution, maintenance, and disputesExperience managing large and complex international trademark and design patent portfoliosProficient in preparing and submitting design patent applications with supporting documentationProven ability to independently manage deadlines and ensure timely completion of assigned tasksSkilled in analyzing new and existing portfolios to identify gaps, ownership issues, and filing recommendationsExperience conducting preliminary trademark searches, ideally using Corsearch's online platformFamiliarity with USPTO, WIPO, Corsearch, Clarivate/CompuMark, PageVault, Orbit, and other relevant IP databases and resourcesAbility to complete electronic filings with the USPTO (including TTAB) and WIPO, with the discretion to delegate as appropriateWorking knowledge of TTAB rules and procedures is a plusExperience with chain of title analysis and updating IP ownership records domestically and internationallySkilled at analyzing trademark watch notices and managing watch servicesAbility to synthesize complex legal information into clear and concise client communicationAdaptable and team-oriented, with a strong commitment to collaborationExperience with trademark and patent docketing software (preferably CPI) is a plusExperience with domain name registration and management, copyrights, and social media is a plusWillingness to work overtime as needed
BenefitsThe firm offers a competitive compensation and benefits package, as well as the opportunity to work on challenging and rewarding matters within a dynamic and supportive team environment.
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This position is located in Chicago, IL with potential relocation and sponsorship assistance depending on candidate qualifications.
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